PCT Newsletter 02/2021: Practical Advice

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Best Practice for Withdrawing International Applications

Q:  I am the agent for an international application and have been instructed by the applicant to withdraw the application and prevent its publication.  What is the best way to do this (especially during the current pandemic)?

A:  In order to withdraw the international application under PCT Rule 90bis.1 and prevent publication of it, the International Bureau (IB) must receive the notice of withdrawal of the application before the corresponding technical preparations for publication are completed (PCT Rule 90bis.1(c))1, but in any case, you are advised to submit it as soon as possible.

In general, but especially during the current pandemic, we recommend the following options for withdrawing the application, which are both carried out using ePCT:

  • Option 1: using the ePCT Action “Withdraw International Application”; or
  • Option 2: using the “Upload Documents” function.

If you have not already created a WIPO Account (the same WIPO Account can be used for all of WIPO’s online services, including ePCT), you will need to create one in order to use ePCT.  You can do this by following the straightforward online instructions at:

https://www3.wipo.int/wipoaccounts/generic/public/register.xhtml

In order to use the preferred “Withdraw International Application” ePCT Action, you will also need access rights (‘eOwnership’) to the international application.  If you have filed the international application concerned using ePCT, the filing process automatically gives you access rights to the application in the system.  However, if you have filed the international application by another means, it is possible to request access rights by logging in to ePCT and submitting an eOwnership request to the IB.  For this, you must log in to ePCT using your WIPO Account, secured with strong authentication.  If you need help with this, please refer to “eOwnership, eHandshakes and Access Rights” on the PCT eServices Help page at: 

https://www.wipo.int/pct/en/epct/learnmore.html?N=693

Option 1:  “Withdraw International Application” Action in ePCT (strongly recommended)

Once you have access rights to your international application in ePCT, you can select the “Withdraw International Application” Action.  When you select the Action, the system automatically generates a notice of withdrawal ready for signature.  One of the benefits of using this ePCT Action is that the system warns you if the technical preparations for international publication have already been completed, in which case withdrawing the application can no longer prevent international publication.  This would enable you to make an informed decision about whether or not to proceed with the request for withdrawal.  Detailed information about using the ePCT Action to request the IB to withdraw an international application can be found on the following PCT eServices Help page:

https://www.wipo.int/pct/en/epct/learnmore.html?N=869

Option 2:  Upload Documents function in ePCT (recommended)

If you do not yet have access rights to the international application concerned and wish to withdraw an international application without requesting access rights, you can use the Upload Documents function to submit a notice of withdrawal to the IB.  It is even possible to upload documents in ePCT without strong authentication (logging in with only the username and password of your WIPO Account), provided that you know the international application number and the matching international filing date.  Please be careful to select the precise document type “Withdrawal of International Application” and then attach a PDF version of your completed Form PCT/IB/372 (Notice of Withdrawal) (available in editable format on the PCT website at:  https://www.wipo.int/pct/en/forms/ib/index.htm) or a letter requesting the withdrawal.  Further information about the Upload Documents function is available at:

https://www.wipo.int/pct/en/epct/learnmore.html?N=820

As soon as your notice of withdrawal has been received in the ePCT system, either via the Action “Withdraw International Application” or by the Upload Documents function (provided that, in the latter case, the precise document type has been selected for upload), the notice of withdrawal will be immediately available in the IB’s processing system and publication will be suspended until the document has been processed by the IB.  Note that you may also indicate in the notice of withdrawal that the withdrawal is made conditional on it being received by the IB in time to prevent international publication.

Alternative methods of sending notices of withdrawal to the IB (not recommended and preferably only to be used if the above two options are not available) 

Please note that, although there are ways of sending notices to the IB other than by using ePCT, none of those methods are recommended by the IB.  One option, the IB’s Contingency Upload Service, is intended only as a back-up service in the unlikely event that the ePCT system is not available.  It does not provide the functions and safeguards of ePCT, and is therefore not considered best practice.  If, however, for some reason you do need to use the Contingency Upload Service, it is available at:

https://pct.wipo.int/ePCTExternal/pages/UploadDocument.xhtml

Furthermore, you are strongly discouraged from sending any documents by fax to the IB.  However, if you are not in a position to use any of the above options, and in an emergency situation, you could send the notice of withdrawal by fax to:  (41-22) 338 82 70 or (41-22) 338 90 90, although you would be advised to call the IB to make sure that the fax had been properly received.  Although it is also possible to send a notice of withdrawal to the IB by post, this is also strongly discouraged, especially due to the unpredictability of postal services in many countries, especially during the current pandemic. 

Communication with the IB in relation to an international application

Given that the IB has suspended the sending out of documents on paper and by fax until further notice, do please ensure that the IB has your e-mail address on file, so that it can transmit the confirmation of withdrawal by e‑mail.  If you have not already done so, you can provide your e‑mail address to the IB by sending an e‑mail to:  pct.eservices@wipo.int, pct.infoline@wipo.int or by using the WIPO (PCT) customer “Contact Us” page at: 

https://www3.wipo.int/contact/en/area.jsp?area=pct

All PCT users are urged to communicate with the IB exclusively by electronic means, preferably through ePCT, especially in light of the current pandemic.  Information on electronic communication methods with the IB is published at:

https://www.wipo.int/pct/en/covid_19/communication.html 

If you would like any assistance or further information on using ePCT, the contact details of PCT eServices can be found at:

https://www.wipo.int/pct/en/epct/learnmore.html?N=769

For any questions regarding your specific application, please contact the PCT Operations Team in charge of your PCT application, preferably via the ‘ePCT Message’ feature which will send an instant message to the Team.  You do not need to have access rights to your application in ePCT or to have logged in to ePCT with strong authentication in order to use the “ePCT Message” feature.  More information on ePCT Messages is available on PCT eServices Help page at: 

https://www.wipo.int/pct/en/epct/learnmore.html?N=536

The e‑mail and telephone numbers of each Team are also indicated on the forms issued by the IB in relation to your international application, or you can use the look-up tool:

https://pct.wipo.int/ePCTExternal/pages/TeamLookup.xhtml

  1. Technical preparations are generally completed 15 days before the publication date (which is scheduled to take place as soon as possible after the expiration of 18 months from the priority date), although any notice of withdrawal should reach the IB in sufficient time to allow the IB to check the signature requirements and process the withdrawal – preferably at least two working days before the 15‑day time period.